Featured Posts
- Facebook Loses Reexaminations of Pragmatus’ Patents
- How is Reexamination Treating Round Rock Research?
- Reexamination has not Saved Apple against MobileMedia Patents, So Far
- What is an “Involved Application” in IPR Practice?
- Apple Victorious over Affinity Labs of Texas’ Portable Audio Player Patent
- Think IP Strategy Offers 2011 News Almanac
- An Update on Oracle’s Infringement Case against Google
- PTO Requests Public Comment on Proposed Rules for AIA Post-Issuance Proceedings
- Microsoft-i4i, Oracle-Google & VirnetX-Apple-Cisco Updates
- Oracle Patent to Emerge from Reexamination
- VirnetX again Sues for Infringement, and again Faces Reexaminations
- How Strong are Google’s Requests for Reexamination of the Lodsys Patents?
- PTO Board Sides with NVIDIA on Two Rambus “Barth I” Patents
- Oracle ‘520 Moves toward Confirmation in Reexamination
- Google Gets Mixed Result against Oracle’s Seventh Patent
- Did Google Request Reexamination of Lodsys Patents?
- Two Updates
- Oracle v. Google Android® Update
- Rambus Wins Limited Exclusion Order at ITC against NVIDIA, despite Pending Reexaminations
- 最初が肝心：不備のない再審査請求書を作成するために
- That’s My Patent You’re Reexamining…
- “Why Wait for Oppositions?” by Scott Daniels, 47 IDEA 343 (Law Review of Franklin Pierce Law School)
- The Basics
Noteworthy Links
- "The Interplay between Reexaminations, Preliminary Injunctions and Stays of Litigation" - by Dennis Crouch at PATENTLYO.COM
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- All Things Pros
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- IPWatchdog
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Recent Requests
PTO Statistics
More IPR Requests Filed against Intellectual Ventures’ Patents, Among the Requests Week of March 24, 2014
| March 31, 2014
As Intellectual Ventures has begun to enforce its vast patent portfolio in court, more and more of IV’s targets are looking to the Patent Office for help. This past week, Canon filed three IPR requests against a single IV patent (see inter partes review Request No. (6)). And Marvell Semiconductor attacked three IV patents that are the subject of infringement actions against Canon, Ricoh and Sendai Nikon (see inter partes review Request Nos. (15), (16) & (18)).
Ricoh, Xerox, and Lexmark International have requested inter partes review of two computer architecture-document management patents owned by MPHJ (see inter partes review Request Nos. (7) & (8)). Several state attorneys general, including the New York Attorney General, the Minnesota Attorney General and the Vermont Attorney General have taken action against MPHJ’s alleged deceptive practices in asserting its patents. The two patents are the subject of five patent infringement actions in the Eastern District of Texas and the District of Delaware. MPHJ has also filed a complaint against the Federal Trade Commission (FTC) in response to FTC’s investigation of MPHJ for unfair or deceptive commercial acts or practices (MPHJ Technology Investments, LLC v. Federal Trade Commission (Case No. 6:13-cv-00011 (W.D. Tex.)).
We are also seeing a growing number IPR requests being filed jointly by multiple companies. Last week, Google and Samsung teamed up to file requests against three Micrografx patents (see inter partes review Request Nos. (3), (4) & (5)).
Mitsubishi Plastics Seeks Inter Partes Review of Lithium Battery Separator Patent, Among the Requests Week of March 17, 2014
| March 24, 2014
In January Celgard – a subsidiary of Polypore International – sued LG for infringement of U.S. Patent No. 6,432,586. The ‘586 patent broadly claims a separator for lithium batteries, that includes “a ceramic layer is adapted … to block dendrite growth and to prevent electronic shorting … .” This case follows earlier infringement actions against Sumitomo and SK. Mitsubishi Plastics has now filed for inter partes review of Celgard’s ‘586 patent (see inter partes review Request No. (5)).
Ericsson requested review of an Intellectual Ventures wireless patent, U.S. Patent No. 7,496,674, that IV has asserted against four telephone companies (see inter partes review Request No. (8)). The ‘674 patent has an unusually long and complex assignment history at the Patent Office.
ZTE asserted a novel legal theory against a wireless device patent owned by InterDigital: the challenged claims are invalid, in part, because the claims of a related patent were found by the U.S. ITC to be invalid over similar art, see In the Matter of Certain Wireless Devices with 3GCapability and Components Thereof, USITC Inv. No. 337-TA-800, Comm’n Op. (Dec. 20, 2013) (see inter partes review Request No. (6)).
And Oxford Nanopore won the Alacrity Prize last week by filing two inter partes review requests against nanopore patent, U.S. Patent No. 8,673,550, on the very day it issued (see inter partes review Request No. (3)).
APJs’ View of Claim Construction Thwarts Petitioner
| March 21, 2014
A major appeal of ex parte and inter partes reexamination was the high rate at which the Patent Office granted requests and initiated proceedings. On the other hand, the APJs in recent months are becoming much more discriminating in their consideration of inter partes review petitions, denying a sizeable percentage of such requests for failing to present a complete and convincing argument for unpatentability.
The APJs’ decision denying review this Monday in Pride Solutions v. Not Dead Yet Manufacturing (IPR2013-00627) is a case in point. The patent claimed a “connect/disconnect coupling for securing a stalk stomper to a tool bar.” (In case you don’t know, “a stalk stomper” stomps on stubble from harvested crops, reducing the possibility of the stubble damaging tractors, etc.). The exemplary claim included the limitation of “a retention means on the plate member” for engaging a pin to prevent desirable longitudinal movement of certain component parts.
Motorola Mobility Attacks Five Intellectual Ventures Patents, Among the Requests Week of March 10, 2014
| March 18, 2014
Intellectual Ventures has at least two infringement actions pending against Google subsidiary Motorola Mobility, one in Florida and one in Delaware. This past week Motorola struck back by requesting inter partes review of three of the IV patents-in-suit (see inter partes review Requests (3), (4) & (5)) and post-grant review of two other IV business method patents (see covered business method post-grant review Request Nos. (2) & (3)).
Intel continues to go after Zond, filing five inter partes review requests against a single Zond patent plasma generation patent (see inter partes review Request Nos. (2)).
Apple Seeks Inter Partes Review of Two VirnetX Patents, Among the Requests Week of March 3, 2014
| March 11, 2014
The war between Apple and VirnetX expanded yet again with Apple requesting inter partes review of two VirnetX (see inter partes review Request Nos. (8) to (11)).
We reported last week that Intel had filed five inter partes review petitions against a single Zond patent. This past week Intel filed two more petitions against another Zond patent (see inter partes review Request Nos., (6) & (7)).
Amending Claims in IPRs is not Getting Easier
| March 10, 2014
The Patent Office justifies its claim construction standard in inter partes and post-grant reviews – the broadest reasonable interpretation – by noting that that the patentee is always free to amend its claims to distinguish over the prior art. In early IPR and CBM practice, however, such claim amendments have proven difficult so far.
The APJs’ Final Written Decision in the IPR BlackBerry v. MobileMedia Ideas (IPR2013-00016), cancelling all challenged claims, is a recent example. MobileMedia’s patent claimed an electronic picture frame for displaying an image in a normal direction regardless of the direction in which the frame is held. The challenged independent claim included the limitation “means for determining a direction … .”
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Intel Files Five IPR Requests against Single Zond Patent, Among the Requests the Weeks of February 17 & 24, 2014
| March 6, 2014
The 60-page limit for IPR petitions continues to plague filers. This difficulty is increased greatly by the rigorous detail with which the challenged patent claims must be applied to the asserted prior art, particularly where the proposed ground is one of obviousness. A few filers are now resorting to multiple petitions to accommodate their arguments – most notable among these is Intel which filed five petitions last week against a single patent owned by Zond and claiming a vapor phase deposition device for making semiconductors (see inter partes Review Request No. (5)). Zond has sued Intel, Toshiba and Fujitsu for infringement of the patent.
Despite the wide enthusiasm for inter partes review, ex parte reexamination continues to be popular in some quarters. For instance, Volkswagen filed requests against four Cloud Farm Associates patents claiming tilt control for cars (see ex parte Request Nos. (3), (5), (6) & (7)). VW clearly chose ex parte reexamination to take advantage of the unlimited page-length for such requests – one request ran to 260 pages. And an undisclosed party took advantage of the anonymity of ex parte reexamination by filing requests against two Apple instant messaging patents (see ex parte Request Nos. (1) & (11)).
